Universal Remote Control Exhibit 1047, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: January 9, 2015
`
`UNITED STATESPATENT AND TRADEMARK OFFICE
`
`BEFORETHE PATENT TRIAL AND APPEAL BOARD
`
`UNIVERSAL REMOTECONTROL,INC.,
`Petitioner,
`
`V.
`
`UNIVERSAL ELECTRONICS,INC.,
`Patent Owner.
`
`Case IPR2014-01146
`Patent 8,243,207 B2
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`WILLIAM A. CAPP, AdministrativePatent Judges.
`
`CAPP, AdministrativePatentJudge.
`
`DECISION
`Institutionof Inter Partes Review
`37 C F.R. § 42.108
`
`
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: January 9, 2015
`
`UNITED STATESPATENT AND TRADEMARK OFFICE
`
`BEFORETHE PATENT TRIAL AND APPEAL BOARD
`
`UNIVERSAL REMOTECONTROL,INC.,
`Petitioner,
`
`V.
`
`UNIVERSAL ELECTRONICS,INC.,
`Patent Owner.
`
`Case IPR2014-01146
`Patent 8,243,207 B2
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`WILLIAM A. CAPP, AdministrativePatent Judges.
`
`CAPP, AdministrativePatentJudge.
`
`DECISION
`Institutionof Inter Partes Review
`37 C F.R. § 42.108
`
`
`
`Universal Remote Control Exhibit 1047, Page 2
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`Case IPR2014-01146
`Patent 8,243,207 B2
`
`Petitioner UniversalRemote Control, Inc. filed a Petition (Paper 1,
`"Pet.") requesting inter partes reviewof claims 12-15 of U.S. Patent No.
`the "'207 patent"). Patent Owner Universal
`8,243,207 B2 (Ex. 1001,
`Electronics, Inc. filed a Preliminary Response (Paper 8, "Prelim.
`Resp."). We have jurisdiction under 35 U.S.C. § 314(a). We conclude that
`Petitioner has shown a reasonable likelihood of prevailingin challenging
`claims 13-15 and we institute inter partes review as to such claims.
`
`L BACKGROUND
`
`A. The '207 patent (Ex. 1001)
`
`The '207 patent, titled System and Methodfor Activity Based
`Configurationof an Entertainment System, relates to methods for
`configuringmulti-input and/or multi-outputhome entertainment systems.
`Ex. 1001, 1:31-33. The invention routs the outputs and inputs of the various
`componentsof an audio/visual ("AV") system through one central device,
`such as an AV receiver. Id. at 1:34-36.
`The inventioncontemplates sending a signal from a universalremote
`control device to a central, "entertainmentdevice" in order to initiate a pre-
`defined configuration of the AV system.
`Id. at 1:3745.
`In addition to the
`control signals sent to the central entertainment device, the inventionalso
`contemplatessending control signals to other appliances in the AV system.
`Id. at 1:45-50. These signals to the other appliances can be transmitted
`directly from the remote control to the other appliances or indirectly by a
`signal transmitted from the remote to the central entertainment device,
`which, in turn, transmits control signals to the other appliances.
`Id. This
`latter feature takes advantage of the fact that the central entertainment device
`
`2
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`has access to appliance status informationnot available to the remote control
`device and the remote control device, in turn, has access to appliance
`command functions not availableto the central entertainmentdevice.
`1:49-57.
`Figure 1 of the '207 patent is shown below.
`
`Id. at
`
`Figure 1
`
`M4
`
`130
`
`CCO
`
`Figure 1 illustratesan AV system in which the outputs of source appliances
`top box 104, first DVD player 106, second DVD player 108,
`such as set
`game console 110, and CD changer 112 are all connected as inputs to an AV
`receiver or "entertainmentdevice" 102.
`Id. at 2:27-32. AV receiver 102
`switches the input stream to designated outputswhich are connected to
`various AV devices such as TV 114, projector 118, and/or speakers 116.
`
`Id
`
`
`
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`at 2:33-38. Also illustratedis a universal remote control or "controlling
`Id. at 2:44-46.
`device" 100 that transmits commands to the appliances.
`
`a
`
`R Illustrative Claim
`Petitioner challenges claims 12-15. Claim 12, reproduced below, is
`an independentclaim:
`12. A method for configuring an audio visual entertainment
`device in communication with a plurality of devices for an
`activity, comprismg:
`associating a command value corresponding to an activity key
`configuration of
`controlling device with a
`of
`the
`the configuration of the entertainment
`entertainment device,
`least one of the plurality of devices
`device comprising at
`being used as an audio visual input source device for the
`the plurality of
`entertainment device and at
`least one of
`an audio visual output destination
`devices being used as
`device for the entertainment device;
`causing the entertainment device to access and use
`the
`configuration associated
`with
`command
`value
`the
`corresponding to the activity key of the controlling device in
`the entertainment device receiving from the
`response
`to
`controlling device a signal which includes the command
`value corresponding to the activity key of
`the controlling
`device; and
`displayingin a display associated with the entertainment device
`a graphical user interface for allowing a user to select at
`least
`one of
`the plurality of devices
`in
`to
`be
`used
`the
`configuration;
`least one of the plurality devices
`wherein the user selection of at
`to be used in the configuration comprises one or more signals
`received from the controlling device having data indicative
`of an appliance, wherein the
`one or more signals
`are
`transmitted from the controlling device to the entertainment
`device in response to an activation of a one or more keys of
`the controlling device which are associated within the
`
`4
`
`
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`controlling device to an appliance being selected for use in
`the configuration, and wherein the controlling device further
`uses the activation of the one or more keys to automatically
`configure itself whereupon an activation of one or more
`the controlling device will cause the
`command keys of
`controlling device to communicate commands to the one or
`more of the audio visual source device and the audio visual
`output destination device.
`
`C. The Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 12-15 of the '207 patent based on the
`alleged grounds of unpatentabilityset forth in the table below, as further
`supported by the Declaration of James T. Geier (Ex. 1003).]
`
`Reference(s)
`
`Dubil (Ex. 1005)*
`Dubil
`Niles (Ex. 1006)3
`Niles and Dubil
`Niles and Kozakai (Ex. 1007)4
`Niles, Dubil, and Kozakai
`
`Basis
`
`§ 102
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claims
`challenged
`12-15
`12-15
`12-15
`12-15
`12-15
`12-15
`
`* The Petition purports to advance only two (2) grounds of unpatentability
`denominated as such. However, due to Petitioner'suse of conjunctive
`and/or disjunctiveconnectors in each of the two grounds, we calculate that
`Petitioneris asserting six grounds. See Edmund Optics,
`Inc. v. Semrock,
`Inc., Case IPR2014-00583(PTABSept. 19, 2014) (Paper 9) (discussing
`multiplication of grounds due to use of conjunctive and disjunctive
`connectors).
`2 U.S. Patent Pub. 2003/0120831 A1, published June 26, 2003.
`3 Niles Audio Corp., IntelliControl Reference Manual, Ver. 8.1, Apr. 2002.
`4 U.S. Patent 4,527,204 to Kozakai, et al, titled Remote Control System,
`issued July 2, 1985.
`
`5
`
`
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`D. Claim Interpretation
`
`In an inter partes review, claims are given their broadest reasonable
`interpretation consistent with the specification. See 37 C.F.R. § 42.100(b);
`Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007). Within
`In re Translogic Tech.,
`this framework, terms generally are given their ordinary and customary
`meaning, as understood by a person of ordinary skill in the art,
`in the context
`of the entire patent disclosure. Id at 1257.6
`
`1.
`
`"device"
`
`(Claims 12-15) and "appliance" (Claim 12)
`"device" and
`
`Petitioner's proposed construction:
`the terms
`[Pet.10-11].
`"appliance" have the same meaning.
`Patent Owner'sproposed construction: none [Prelim. Resp. 7-8].
`A claim construction analysis begins with, and is centered on, the
`claim language itself. See lnteractiveGift Express,
`Inc. v Compuserve, Inc.,
`256 F.3d 1323, 1331 (Fed. Cir. 2001). Claim 12 describes a plurality of
`"devices"that can be used as an audio visual input source "device" and an
`audio visual outputdestination "device." The claim describes that one of the
`plurality of "devices" can be used in a configuration and that such devices
`can receive signals that have data indicative of an "appliance." The claim
`also describes that an "appliance" can be selected for use in a configuration.
`Turningnow to the Specification, the Specification discloses that
`appliances, controllableby the universal remote control, includes televisions,
`VCRs, DVRs, DVD players, cable or satelliteconverter set-top boxes,
`amplifiers, AV receivers, CD players, game consoles, home lighting,
`drapery, fans, HVAC systems,
`thermostats, and personal computers, etc.
`
`* Citing Phillips v A WH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`6
`
`
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`Ex. 1001, 2:50-55. These appliances are elsewhere referred to in the
`Specification as "devices." Id. at 1:4445 ("connected devices"); 4:38-39
`("connected device such as TV 114"). Thus, when the claims refer to either
`devices or appliances that serve as either AV input sources or AV output
`destinations that are connected to the "entertainmentdevice," the terms have
`the same meaning and are used interchangeably. Thus, we partially agree
`with Petitioner to the extentthat the terms "destinationdevice" and
`"destinationappliance" are used interchangeablyin the Specification and the
`claims. Pet. 10-11 (citing Ex. 1001, 7:33-37). That is how they will be
`construedfor the purpose of this decision.
`With respect
`to the term "entertainment device," as used in the claims,
`referring to Figure 1 and its correspondingdescription in the Specification,
`Id. at 2:27-38.
`AV Receiver 102 is connected to various inputs and outputs.
`Later in the same paragraph, the Specification teaches that the "appliances"
`that are controlled by the universal controllingdevice include AV receivers.
`Id. at 2:53. Thus, we construe "entertainment device" as broad enough to
`encompass AV receivers and substantially similar devices/appliances that
`are capable of being connected to a plurality of AV input sources and a
`plurality of AV output destinations.
`With respect to the term "controlling device," the unit or component
`that is illustratedas element 100 in Figures 1 and 2 is referred to consistently
`throughoutthe Specification as "controlling device 100" or "the controlling
`device." See e.g., Ex. 1001, 2:45, 2:59, 3:1, 3:21, 4:35. The controlling
`device is a commonly used item of consumerelectronics with which most
`lay persons are familiar as well as persons skilled in the relevant art.
`Regardless of what the "controlling device" is called, the dispute between
`
`7
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`the parties focuses on what it does, not the nomenclature that is assigned to
`In our opinion, whether element 100 can be construedbroadly as either a
`it.
`"controlling appliance" or "controlling device" is not material to this
`decision and we decline to construe it expressly.
`
`2.
`
`"ActivityKey"(Claims 12, 13, and 14)
`Petitioner's proposed construction: any key or button on the
`a configuration of
`remote control
`that corresponds to
`the
`system.
`Pet. 11-12.
`Patent Owner's proposed construction:
`a key that, upon
`activation,
`transmits a signal
`to an entertainment device that
`a previously defined
`configuration for an
`corresponds
`to
`activity.
`Prelim. Resp. 10. The two proposals differ in that Patent Owner limits the
`construction to require transmission of a signal
`to an entertainment device,
`such as AV Receiver 102 in Figure 1, whereas Petitioner'sproposed
`construction is broad enough to allow any configuration or reconfiguration
`of an AV system (e.g., change the TV channel), even if no signal
`is
`transmittedto the entertainment device (AV Receiver 102 or an analog
`thereof). The Summary of the Inventionsection of the Specification states:
`The inventivemethods described herein comprise a cooperative
`effort between the AV receiver and an associated universal
`controlling device such as
`a remote control in which activation
`of an activity key or button on the controlling device results in
`transmission of a signal to the AV receiver to initiate certain
`previouslydefined configuration actions . . . .
`Ex. 1001, 1:37-43 (italics added). Havingreviewed both parties' proposed
`contructions in light of the Specification, we adopt Patent Owner'sproposed
`construction as more aligned with the patent's description of the invention.
`
`8
`
`
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`See Phillips, 415 F.3d at 1316 (quoting RenishawPLC v. Marposs Societa'
`per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) ("The construction that
`stays true to the claim language and most naturally aligns with the patent's
`description of the inventionwill be,
`in the end, the correct construction.")).
`
`3.
`
`"Configurationof the EntertainmentDevice"
`
`This phrase appears in independentclaims 12, 13, and 14. Claim 15
`depends from claim 14. Thus, this phrase appears in every challenged claim.
`Neitherparty proposed a construction for this term.
`In the absence of briefing, arguments of counsel, and detailed citations
`to the record from either party, it appears to us that this term is capable of
`being construedin either of at
`least two ways. On the one hand, it could be
`construednarrowly so as to require transmission of a signal to the
`entertainment device such that the configuration thereof contemplates
`affirmatively selecting an AV input source and an AV output destination and
`affirmatively performing switching actions accordingly. Such a narrow
`construction arguably could be supported by language, such as the
`following, in the Specification:
`audio/video outputs of
`a group of various media source
`top box ("STB") 104,
`for example a set
`appliances such as
`a
`first DVD player 106,
`a second DVD player 108,
`a game
`inputs
`console 110, and a CD changer 112 are all connected as
`to an AV receiver 102. AV receiver 102 in turn functions to
`switch the currently desired input media stream to one or more
`designated outputs of AV receiver 102 which are,
`in turn,
`connected to various audio and/or video rendering devices such
`as TV 114, projector 118, and/or loudspeakers 116 . . .
`Ex. 1001, 2:27-37.
`the phrase could be construed broadly such that the
`On the other hand,
`entertainment device and associated input and outputappliances are
`
`9
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`"configured" by selectively powering on and powering off the input and
`outputappliances so that, for example, only one inputappliance supplies an
`active input signal to the entertainment device and only one output appliance
`renders the output signal. Such a broad construction would cause the claims
`to read on AV receivers and other entertainment devices that passively
`transmitsignals from input to outputappliances without necessarily
`engaging in any switchingactivity.
`In the absence of receiving proposed constructions from either party
`accompanied by arguments and citations to the record, we provide an
`interim, preliminary construction for the purpose of this Decision. For
`purposes of this Decision only, we will construe "configurationof the
`entertainment device"broadly so as to encompass AV system configurations
`which do not require active switchingbetween input sources and output
`the AV Receiver/EntertainmentDevice.
`destinations at
`
`II. ANALYSIS
`
`A. Anticipationof Claims 12-15 by Dubil
`1. Dubil (Ex. 1005)
`Dubil discloses a remote control device that provides commands
`based on the configuration of componentsin an AV system. Ex. 1005,
`Abstract. One embodiment of Dubil is
`illustratedin Figure 1 below.
`
`6 This interim construction does not foreclose us from using a different
`construction at a later point in the proceeding upon the developmentof a
`more complete record. See Pfizer, Inc. v Teva Pharm., USA,
`Inc., 429 F.3d
`1364, 1377 (Fed. Cir. 2005) (court may engage in a rolling claim
`construction, in which the court revisits and alters its interpretation of the
`claim terms as its understandingof the technology evolves).
`
`10
`
`
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`114
`
`115
`
`Cable
`
`Satell te
`
`Intemet
`
`120
`
`Audio
`
`VCR
`
`Television
`
`In Figure 1, system 100 includes a television110, an audio
`system 111, a DVD player 112, a VCR 113, a cable interface l14, a satellite
`receiver 115, and a set-top box 116. Ex. 1005 ¶ 17. A remote control device
`150 provides for remote control of some or all of the components 110-116.
`In operation, the system 100 may receive audio-video information from the
`satellite receiver 115 and provide the video to the television110 and the
`audio to the audio amplifier 111.
`Id At another point in time, the
`system 100 may provide audio-video informationfrom the VCR 113, and
`Id
`provide both the video and the audio informationto the television110.
`DubiPs system identifiesthe components of the system.
`Id. ¶ 18. An
`"activity set" associates select system functions to particular components to
`Id Thus, although multiple components
`support a particular user activity.
`of a system may include an audio output signal, an activity set
`identifies
`which particular component in the system provides the audio output of the
`Id Figures 2A and 2B of Dubil are shown below.
`system.
`
`11
`
`
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`110
`
`FIG. 2A
`
`FIO, 28
`
`Id
`Figure 2A illustratesan activity set 200a for satellite broadcasts.
`¶ 19. Satellitereceiver 115 provides AV informationto VCR 113 which
`then providesAV informationto the television110.
`Id Alternatively,the
`system may be configured as illustratedin Figure 2B to view a DVD movie.
`In this activity, DVD player 112 is the source of the AV
`Id ¶ 20.
`information. Id The DVD player 112 provides the video informationto
`television 110, and the audio informationto audio amplifier 111.
`
`2. Analysis of'Claim 12
`Petitioner argues that all of the limitationsof independent claim 12 are
`satisfied by Dubil. Pet. 19-25. Petitioner supports its position with
`declaration testimonyfrom James T. Geier. Ex. 1003 ¶¶ 34-42. Petitioner
`asserts that Dubil's VCR 113 is an entertainment device within the meaning
`of claim 12. Pet. 19. Petitioner'scase depends,
`in part, on its assertion that
`the limitation in claim 12 directed to signals from the controlling device to
`the entertainment device,
`including data indicative of an appliance selected
`for use in the configuration, is satisfied inherently by Dubil. Pet. 22-23.
`
`12
`
`
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`Patent Owner disputes Petitioner's position, among other things, by
`arguing that Petitioner'sabove mentioned inherency theory fails. Prelim.
`Resp. 17-18. Patent Owner argues that the passage in Dubil that Petitioner
`relies on states only that the VCR can provide audio visual informationto
`various output devices.
`Id. at 18-19. Based on the record before us, we are
`not persuaded that Dubil necessarily requires that a signal
`is transmitted to
`the VCR 113 that contains data pertaining to configuring VCR 113 to
`receive input from satellite 115 or configuring VCR 113 to send output to
`television 110. Petitioner presents no persuasive extrinsic evidence that
`VCR 113 receives signals from the controllingdevice that necessarily
`contains data "indicative of an appliance." Mr. Geier's declaration
`testimony on this issue is equivocal and, at best, conclusory. Ex. 1003 ¶ 39.
`It appears to us that it is possible that Dubil's remote 150 configures its AV
`system by doing nothing more than sending separate signals to satellite 115,
`VCR 113, and Television110 without any of those separate signals
`containing data regarding a configuration interrelationshipbetween and
`It is well settled that inherency
`among those three AV system components.
`may not be established by mere probabilitiesor possibilities. See Bettcher
`"To
`Indus., Inc. v. Bunzl USA,
`Inc, 661 F.3d 629, 639 (Fed. Cir. 2011).
`serve as an anticipation when the reference is silent about the asserted
`inherent characteristic, such gap in the reference may be filled with recourse
`to extrinsic evidence. Such evidence must make clear that the missing
`descriptivematter is necessarily present in the thing described in the
`reference . . . ." Cont'l Can Co. USA v Monsanto Co., 948 F.2d 1264, 1268
`(Fed. Cir. 1991).
`
`13
`
`
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`We are not persuaded that Petitioner has made a threshold evidentiary
`showing that makes clear that Dubil necessarily operates in accordance with
`the claimed method. Accordingly, we fmd that Petitioner has failed to
`establish a reasonable likelihoodthat it wouldprevail at trial in establishing
`that claim 12 is anticipated by Dubil.
`
`3. Analysis of Claim 13
`
`Independent claim 13 differs in scope from claim 12 in that there is no
`requirementthat the controllingdevice transmits a signal to the
`entertainment device that contains data indicative of an appliance. Ex. 1001.
`Claim 13 also differs in that it contains limitationsdirected to downloading
`configurationinformationfrom a computing device to the entertainment
`device and also to the controllingdevice.
`Id Petitioner asserts that Dubil
`discloses each limitation of the claim. Pet. 25-29. Petitioner asserts that the
`first two limitations of claim 13, (1) the "associating a command value"
`limitation and (2) the "causing the entertainment device to access"
`limitation, are satisfied by paragraphs 18, 19, and 31 of Dubil. Id at 25-28.
`Petitioner asserts that the third limitation of claim 13, the "wherein the
`configurationof the entertainment device is downloaded"limitation, is
`satisfied by the disclosure in paragraph 34 of Dubil.
`Id. at 28-29.
`Patent Ownerargues that Dubil fails to satisfy the first two limitations
`of claim 13. Patent Ownerdisputes that Dubil: (1) configures an AV device
`by associating a command value with a system configuration; and (2) causes
`the entertainment device to use the configuration. Prelim. Resp. 22-27.
`
`7 With respect to the third limitation of claim 13, we agree with Petitioner
`that paragraph 34 of Dubil discloses downloadingdevice configurations, an
`issue that Patent Owner does not dispute.
`
`14
`
`
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`to the first two limitationsof claim 13, paragraphs 18
`With respect
`and 19 of Dubil disclose an AV system configuration that includes an
`activity set that associates system functions with particular components to
`support a particularuser activity, such as watching a satellite broadcast on
`television. See Fig. 2A. We agree with Petitioner that this evidence
`constitutes a threshold showing sufficient to institute a trial.
`Accordingly,we find that Petitioner has demonstrated a reasonable
`likelihood that it would prevail at trial in establishingthat claim 13 is
`anticipated by Dubil.
`
`4. Claim 14
`
`Independent claim 14 is substantially similar in scope to claim 13,
`except that it omits limitationsdirected to downloadingdevice configuration
`informationfrom a computing device. Thus, claim 14 is broader than claim
`
`13.
`
`The parties raise essentially the same arguments with respect
`to
`In view of our
`claim 14 that we considered with respect
`to claim 13.
`discussion of paragraphs 18 and 19 of Dubil above with respect
`to claim 13,
`we find that Petitioner has demonstrated a reasonable likelihoodthat it
`in establishing that claim 14 is anticipated by Dubil.
`would prevail at trial
`
`5. Claim 15
`Claim 15 depends from claim 14 and adds a limitation directed to
`displaying informationin a graphical user interface associated with the
`entertainment device. Petitioner relies on paragraph 31 of Dubil as
`satisfying this limitation. Pet. 35. Patent Owner argues that Dubil does not
`meet the display claim limitation. Prelim. Resp. 34-35.
`
`15
`
`
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`Paragraph 31 of Dubil states,
`in pertinent part:
`The user
`invokes an activity set, using,
`for example, selection
`keys on the remote control device 150, or using a menu that is
`presented on a display device.
`Ex. 1005 ¶ 31. This evidence is sufficient to warrant institution of a trial.
`Accordingly, we find that Petitioner has demonstrated a reasonable
`likelihood that it would prevail at trial
`in establishing that claim 15 is
`anticipated by Dubil.
`
`R Obviousness of Claims 12-15 Over Dubil
`
`Petitioner presents an obviousness theory as an alternativeto its
`anticipationtheory in the first ground asserted in the Petition. Pet. 18.
`Patent Ownerargues that Petitioner'sobviousness case is deficient because
`it does not comply with the frameworkset forth in Graham v. John Deere
`Co., 383 U.S. 1, 17-18 (1966). We agree.
`Essentially, Petitioner merely alleges that Dubil anticipates claims 12
`it nevertheless
`through 15 and, to the extent that it may not anticipate,
`renders the claims obvious. See e.g., Pet. 19. This is not sufficient to set
`forth a case of obviousness. Novelty under 35 U.S.C. § 102 and
`nonobviousnessunder 35 U.S.C. § 103 are separate conditions of
`patentability. See Cohesive Tech., Inc. v. Waters Corp., 543 F.3d 1351,
`"[I]t does not follow that every technically
`1363 (Fed. Cir. 2008).
`anticipated inventionwould also have been obvious." In re Fracalossi, 681
`F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).
`
`"Ground 1: Claims 12-15 Are Anticipatedby the '831 Publication Under
`35 U.S.C. § 102, and if not Anticipated, Are Rendered Obviousby the '831
`PublicationUnder [35] U.S.C. § 103." Pet. 18.
`
`16
`
`
`
`Universal Remote Control Exhibit 1047, Page 17
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`
`IPR2014-01146
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`The tests for anticipation and obviousness are different. Cohesive,
`543 F.3d at 1364. Obviousnessrequires an analysis under the Graham
`Id In this case, Petitioner did not present a proper obviousness case
`factors.
`under Graham. See KSR Int'l Co. v. TeleflexInc., 550 U.S. 398, 406-407
`(2007); 35 U.S.C. § 312(a); 37 C.F.R. § 42.104(b)(5).
`Consequently, we do not fmd that Petitioner has demonstrated a
`reasonable likelihood that it wouldprevail at trial in establishingthat claims
`12-15 are obvious over Dubil.
`
`C. Obviousness over Niles and Combinations Based on Niles
`Petitioner'ssecond stated ground of invalidity is phrased in terms of a
`plurality of alternatives.
`Ground 2: Claims 12-15 Are Unpatentable as Obvious Over
`Niles Alone or in View of the '831 Publication and/or the '204
`Patent Under 35 U.S.C. § 103(a).
`Pet. 35. After accounting for the various conjunctive and disjunctive
`connectors,Petitioner actually is asserting four grounds of obviousness,
`(1) Niles alone; (2) Niles and Dubil; (3) Niles and Kozakai;
`namely, over:
`and (4) Niles, Dubil, and Kozakai. For the reasons discussed below,we do
`not find thatPetitioner has demonstrated a reasonable likelihood that it
`would prevail at trial in establishingthat claims 12-15 are obvious over any
`of these four alternatives.
`
`1. Obviousness Over NilesAlone
`
`With respect to all four challengedclaims, 12-15, Petitioner does not
`engage in a proper obviousness analysis under Graham and KSR.
`In
`particular, Petitioner has not provided us with any cogent explanation or
`analysis articulatingwhy someone of ordinary skill in the art, having first
`
`17
`
`
`
`Universal Remote Control Exhibit 1047, Page 18
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
`
`IPR2014-01146
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`
`found differences between Niles and the claimed invention,would have had
`reason to modify Niles to bridge those differences in order to achieve the
`claimed invention. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006)(requiringan obviousness conclusion to be based on explicit
`articulated reasoning with rational underpinning) cited with approval in KSR
`Int'l Co. v. TeleflexInc., 550 U.S. 398, 418 (2007) .
`Our rules require that a petition identify the evidence relied upon and
`the relevance of the evidence that is relied upon to challenge a claim. 37
`C.F.R. § 42.104(b)(5). Petitioner relies primarily on the declaration
`testimonyof Mr. Geier to bridge the gap between Niles and the claimed
`invention. Pet. 35-53. However,Mr. Geier's testimony does not supply the
`requisite reasoning with some rational underpinning to modify Niles alone to
`achieve the claimed invention.
`Instead, Mr. Geier resorts to secondary
`references to supply what is missing from Niles without an explanationas to
`why a person of ordinary skill in the art would have modifiedNiles with the
`secondaryreferences. See e.g., Ex. 1003 ¶¶ 63, 65, 67, 68. Petitioner's
`repetitious, conclusory allegations that it would have been obvious to
`achieve the inventionof claims 12- 15 in view of Niles alone, without more,
`are insufficient to make a threshold showing to warrant institution of a trial.
`Consequently, we find that Petitioner has failed to establish a
`reasonable likelihood that it would prevail at trial in establishing that claims
`12-15 are obviousover Niles alone.
`
`2. Obviousnessof Claims 12-15 over Niles and Dubil; Niles and
`Kozakai; and/or Niles, Dubil, and Kozakai
`Petitioner'sassertion of obviousness over various combinations of
`references based on Niles suffers from essentially the same infirmities that
`
`18
`
`
`
`Universal Remote Control Exhibit 1047, Page 19
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`IPR20l4-01146
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`we have identifiedabove with respect
`to obviousness over Niles alone.
`Petitioner'sassertion of obviousness merely recites allegations that all of the
`claim limitations are satisfied by the combination of Niles and various
`secondary references. There is no cogent analysis of the differences
`between the prior art and the claimed invention. Additionally, Petitioner has
`not provided us with any cogent explanationor analysis articulating why
`someone of ordinary skill in the art would have had reason to combine Niles
`with either Dubil or Kozakai or both to achieve the claimed invention. See
`KSR, 550 U.S. at 418 (it can be importantto identify a reason that would
`have prompted a person of ordinary skill in the art to combine elements in
`the way the claimed new inventiondoes). Petitioner merely offers the
`following conclusory statements from its declarant, Mr. Geier.
`56. Due to their common subject matter,
`is evident that the
`it
`[Dubil] and/or
`teachings of
`[Kozakai]
`can
`used
`to
`be
`supplement and combine with the teachings of
`the Niles
`reference.
`is my opinion that a person of ordinary
`57. Accordingly,
`it
`skill in the art would have understood the combined disclosure
`of Niles, [Dubil] and/or [Kozakai] to render claims 12-15 of the
`'468 patent obvious.
`Ex. 1003 ¶¶ 56-57. Such conclusory assertions are insufficientto satisfy
`Petitioner'sevidentiary burden to warrant institutionof a trial. See
`Innogenetics, NV v. AbbottLabs, 512 F.3d 1363, 1373 (Fed. Cir.2008)
`(criticizing patent challenger's expert report, among other things, for failing
`to explain how or why a person of ordinary skill in the art would have found
`claims obvious in light of combinations of particular references); 37 C.F.R.
`§ 42.65(a).
`
`19
`
`
`
`Universal Remote Control Exhibit 1047, Page 20
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01146
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`IPR2014-01146
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`
`Accordingly, we find that Petitioner has failedto establish a
`reasonable likelihood that it would prevail at trial in establishing that claims
`12-15 are obvious over Niles and various combinations of secondary
`references.
`
`III. CONCLUSION
`We conclude that Petitioner has shown a reasonable likelihood of
`prevailing in establishing that claims 13-15 are unpatentab
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